New Trademarks Rules Require a Different Approach for Swag

Including promotional items in trademark use descriptions will require a different approach under the new trademark rules. On June 17, 2019, the Trademarks Act and the registration process are changing dramatically. Trademark applications will have to classify the goods and services in the use description according to the international Nice classifications. There are 34 classifications of goods, and 11 classes of services.

Trademark filing fees and trademark renewal fees will be class based. Applications containing more than 2 classes of goods and services, and all renewals, will be more expensive than they are now.

Conventional wisdom was to include promotional items in the goods and services list. You might include as proposed uses things you might put your brand on, knowing they could easily be dropped before the registration was final. For example, if you build construction equipment, you might also sell hats, tee shirts and toys with your brand on it. Those items would be routinely added to the use list, in part to make it easier to stop others from putting your brand on a hat.

That’s still a good idea, but it could dramatically increase the cost of the trademark application and its renewal. How costly depends on the number of classes involved. It is not unusual for the primary goods and services to be in 2 or 3 classes. Promotional goods can easily cover several more.

The protection may or may not be worth the extra cost – it is a discussion and decision that was never relevant before.